DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The status of the claims stands as follows:
Pending claims: 93-112
Withdrawn claims: None
Claims currently under consideration: 93-112
Currently rejected claims: 93-112
Allowed claims: None
Claim Objections
Claim 103 is objected to because it reads “The savory composition of claim 13” and there is no claim 13. For the purpose of this examination, the claim will be considered to depend from claim 93.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 93-98, 102, and 108 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ley (US 2009/0214728).
Regarding claims 93, 94, 95, 96, 97, 98, 102, and 108, Ley teaches a savory composition (corresponding to the ingredients in the table of Example 5 combined with the 300 mL of water added to the ingredients as described in the preparation method of Example 4) comprising an umami agent in the form of L-glutamine; and a taste modulator composition consisting essentially of: (1) a first taste modulator component consisting essentially of a first salt having a first cation Mg2+ and a first anion in the form of chloride (corresponding to MgCl2 * 6H2O); (2) a second taste modulator component consisting essentially of a second salt having a second cation Ca2+ and a second anion in the form of chloride (corresponding to CaCl2 * 2H2O); and (3) a third taste modulator component consisting essentially of a third salt having a second cation K+ and a third anion in the form of phosphate (corresponding to KH2PO4) [0118]-[0120] as required by present claims 93, 95, 96, 97, and 98. Ley discloses that the mixture is for enhancing salt taste (title of Example 5 above [0119], which indicates that the mixture is edible and is thus a food product as recited by present claim 108.
Ley also discloses that the composition comprises (1) the first taste modular component at a concentration of 0.73 g which corresponds to 3.6 mM (MgCl2 * 6H2O has a molecular mass of 203.3 g/mol); (2) the second taste modulator component at a concentration of 0.65 g which corresponds to 4.4 mM (CaCl2 * 2H2O has a molar mass of 147.01 g/mol); and (3) the third taste modulator component at a concentration 0.215 g which corresponds to 1.6 mM (KH2PO4 has a molar mass of 136.086 g/mol) [0118]-[0120]. These values fall within the ranges recited by present claims 93 and 94. Ley also discloses that the composition comprises the umami agent L-glutamine as required by present claims 93 and 102. Ley discloses that the umami agent is present in the composition in a concentration of 0.029 wt.% (calculated using the total weight of the ingredients listed in the table of Example 5 plus the 300 mL of water added to the ingredients as described in the preparation method of Example 4) [0118]-[0120]. This concentration of umami agent falls within the concentration of umami agent recited in present claim 93.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 93-101, 104, and 107-112 are rejected under 35 U.S.C. 103 as being unpatentable over Ley (US 2009/0214728).
Regarding claims 93, 94, 95, 96, 97, 98, 99, 100, 101, and 104, Ley teaches a savory composition (corresponding to ready-to-eat formulations) [0085] comprising an umami agent (corresponding to yeast extract in [0137], [0147], [0153] as a further constituent [0102]); and a taste modulator composition (corresponding to a mixture) consisting essentially of (1) a first taste modulator component consisting essentially of a first salt having a first cation Mg2+ and a first anion in the form of chloride; (2) a second taste modulator component consisting essentially of a second salt having a second cation Ca2+ and a second anion in the form of chloride; and (3) a third taste modulator component consisting essentially of a third salt having a second cation K+ and a third anion in the form of chloride [0025]-[0026] as required by present claims 93, 95, 96, 97, 98, 99, and 100. Ley also teaches that the umami agent is yeast extract as recited by present claim 104; and may be present in the composition in a concentration of 0.1 wt.% (i.e., 15 g of formulation C, wherein formulation C comprises 12.28 g yeast extract, is added to 1000 mL water) [0137], which falls within the concentration of umami agent recited in present claim 93. Ley teaches that the savory composition is a food product (corresponding to ready-to-eat formulations) [0085] as required by present claim 108.
Ley teaches that the savory composition may comprise the taste modulator composition in a concentration of from 0.01 wt.% to 5 wt.% [0087]; and that the taste modulator composition may contain the first, second, and third taste modulator components in a total concentration of 10-90 wt.% [0039]. As such, each of the first, second, and third taste modulator components are present in a concentration from greater than 0 wt.% to less than 90 wt.% of the taste modulator composition; and each of the first, second, and third taste modulator components are present in a concentration from greater than 0 wt.% to less than 4.5 wt.% of the savor composition. These concentrations along with the disclosure of a savory composition containing 3.6 mM, 4.4 mM, and 1.6 mM of a first salt having a first cation Mg2+, a second salt having a second cation Ca2+, and a third salt having a third cation K+, respectively, (see calculations in the 35 U.S.C. §102(a)(1) rejection of claim 93 above) [0118]-[0120] would allow for final concentrations of first, second, and third taste modulator components in the savory composition as recited in present claims 93, 94, and 101, wherein the third taste modulator may be present at a higher amount than the first and second taste modulators, and the first and second taste modulators are present in equal amounts. Therefore, given that the composition of the prior art allows for a ratio of components as presently claimed in the savor compositions, the claimed first, second, and third taste modulators and their amounts are considered to be rendered obvious by Ley.
Regarding claim 107, Ley teaches the invention as described above in claim 93, including the savory compositions include soups, sauces, and meats [0090]. These are same savory compositions taught in the instant specification at [0237]. Since Ley teaches the same savory compositions as instantly disclosed, the pH of the products of the prior art is considered to meet the claimed pH in the absence of convincing arguments or evidence to the contrary. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). MPEP §2112.I.
Regarding claims 109 and 110, Ley teaches the invention as described above in claim 93, including the food product is soup [0090], [0153].
Regarding claims 111 and 112, Ley teaches the invention as described above in claim 93. Given that the savory composition is rendered anticipated or rendered obvious by Ley, the savory compositions comprising the combination of umami agent and taste modulator composition are considered to have an improved mouthfeel as claimed when compared with compositions that do not contain the first, second, and third taste modulator components.
Claims 102-103 and 105-106 are rejected under 35 U.S.C. 103 as being unpatentable over Ley (US 2009/0214728) as applied to claim 93 as evidenced by Prosol (Yeast Extracts: Natural Ingredient of Modern Industry”, 2025, Prosol, https://www.prosol.it/in-the-press/yeast-extracts-natural-ingredient-of-modern-industry/).
Regarding claims 102, 103, 105, and 106, Ley teaches the invention as described above in claim 93, including savory compositions containing the umami agent yeast extract [0137], [0147], [0153]. Yeast extract contains glutamic acid and the 5’-ribonucleotides guanosine 5’-monophosphate and inosine 5’-monophosphate as evidenced by Prosol (page 4, 1st paragraph). Furthermore, yeast extract is hydrolyzed protein as evidenced by Prosol (page 2, Fig. 1); and yeast is produced through fermentation as is known in the art. Therefore, the umami agent comprises combinations of glutamic acid, 5’-ribonucleotide in the form of guanosine 5’-monophosphate and inosine 5’-monophosphate, and hydrolyzed yeast protein as recited by present claims 102, 103, and 105; and the umami agent is fermented as recited by present claim 106.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 93-105 and 108-112 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 101-112 of co-pending Application No. 18/676,083 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 93, 94, 101, and 111-112 require the same components, the same concentrations, and the same improved mouthfeel as required by co-pending claims 101-103 and 110-111. Instant claims 95, 96, 97, 98, 99, and 100 require the first, second, and/or third ion to be selected from citrate, sulfate, chloride, and combinations thereof while co-pending claim 112 also requires the first, second, and/or third ion to be selected from citrate, sulfate, chloride, and combinations thereof. Instant claim 102 requires the umami agent to be at least one of the recited ingredients while co-pending claim 107 requires the umami agent to be at least one of the recited ingredients wherein options for the umami agent in the instant claim are the same options for the co-pending claim. Instant claim 103 requires the umami agent to be at least one of the recited ingredients while co-pending claim 108 requires the umami agent to be at least one of the recited ingredients wherein options for the umami agent in the instant claim are the same options for the co-pending claim. Instant claims 104 and 105 require the umami agent to be an autolyzed or hydrolyzed yeast protein or hydrolyzed vegetable protein or for the umami agent to be an extract or puree prepared from a yeast, a vegetable, a cereal, a meat, a fish, a dairy product, or an egg yolk while co-pending claim 109 requires its umami agent to be the same. Instant claim 108 requires the product to be a food product and co-pending claim 104 requires the product to be a food product. Instant claims 109 and 110 require the product to be a pasta sauce or soup as required by co-pending claims 105 and 106.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/KELLY P KERSHAW/Examiner, Art Unit 1791